Gilbert Hyatt: BPAI Erred in Aggressive Grouping of Claims

Hyatt v. Dudas (Fed. Cir. 2008)

Gilbert Hyatt has been famous for his early microprocessor patents. This appeal “concerns the patentability of approximately 2,400 claims in twelve related patent applications … that claim priority … to the early 1980s or before.” Since being filed, all twelve applications have also been “amended to add hundreds of claims that were not included in the original applications.”

The PTO examiner rejected all the claims in all twelve applications – most commonly for lacking proper written description. On appeal, the BPAI refused to independently review each of Hyatt’s claims, and instead only considered the twenty-one claims that he had discussed in the “Summary of the Invention” section of the BPAI briefs. Appealing that decision, Hyatt convinced the DC district court that the BPAI had improperly selected the representative claims. The PTO now appeals that district court decision.

On appeal, the Federal Circuit affirmed – finding that the BPAI cannot create a representative claim by simply grouping all claims rejected for lacking written description under the same “ground of rejection” “unless the claims share a common limitation that lacks written description support.” 37 CFR 1.192(c)(7).

“[T]he applicant can waive appeal of a ground of rejection, and can waive the right to demand additional subgrouping of claims within a given appealed ground. But the applicant cannot waive the Board’s obligation to select and consider at least one representative claim for each properly defined ground of rejection appealed.”

Affirmed. On remand, the BPAI must consider “all grounds of rejection challenged by Hyatt. . . However, the Board is free on remand to apply the rule of waiver to any grounds of rejection not contested by Hyatt in his initial appeals to the Board, provided that such grounds do not become relevant on remand due to realignment of the representative claims or other aspects not previously at issue.”

Notes:

  • 2400 claiming priority thirty years back…

31 thoughts on “Gilbert Hyatt: BPAI Erred in Aggressive Grouping of Claims

  1. 31

    Patents no longer require that you “make” things, but rather, “make up” things…… And if I were a client and I see attorneys submitting 200+ claims for an inventive disclosure that’s only couple of pages long, I’d fire them.

    Having said this, I’m sure there are apps which may require that many claims, but can we say that all apps filed with a ridiculous amount of claims are “all” necessary simply b/c they “paid” their fees? I guess so…. if you believe that the responsibility of producing quality patent is solely on the PTO…. Sad….

  2. 30

    Re an Administrative Proceedure Act suit, I do not think the CAFC is either that naive, or that impressed with the USPTO management, that it would allow the USPTO to use a “non-administrative-finality” excuse to allow [if proven] examiners to just sit on applications they don’t want to handle [while cherry-picking numerous much later filed easier applications] for a total accumulated examination delay of 30 years!

  3. 29

    There is no error on the part of BPAI. With 2400 claims on hand, picking up claims discussed in the Summary of Invention should be the most sensible way.

  4. 28

    ” If the PTO refuses to obey the statute, the rules, and its own published policies and guidelines, there’s no amount of cleverness that’s going to move the case forward.”

    What a tragedy. You mean those 2000 claims that didn’t appear in the applications as filed might not ever get examined?

    Gosh, how awful. In any event, I’ll have to remember not to invest in companies who engage in such practices. Maybe … just maybe … it’s wiser to invest in companies who are actually doing research and development and, uh, making stuff.

  5. 27

    “In a world where the doctrine of equivalents, induced infringement, contributory infringement, imports, exports, etc. all have real problems,a and the doctrine of exhaustion cuts quite broadly, you have to have claims that are literally and directly infringed by the manufacturer, the importer, the designer who has an offshore fab, the systems integrator, the end user.”

    LOL. Yes, you “have to have” all those claims, especially if your invention is sorta crappy and stoopit and exists only on paper.

  6. 26

    200 claims per application – let’s see, that’s a minimum of $10,000 per application, if only 3 independent claims. If Hyatt is a small entity, it’s still $5000.

    And those 200 claims have to be closely enough related to survive restriction, so there cannot possibly be a “serious search burden.”

    In a world where the doctrine of equivalents, induced infringement, contributory infringement, imports, exports, etc. all have real problems,a and the doctrine of exhaustion cuts quite broadly, you have to have claims that are literally and directly infringed by the manufacturer, the importer, the designer who has an offshore fab, the systems integrator, the end user. Without knowing more, 200 claims isn’t per se ridiculous. (I’m over 100 claims quite regularly.)

    On the little bit of information we have, it looks like Hyatt is subsidizing the PTO and everyone quite handsomely.

    CJ, what’s the gripe? Maybe you have information I don’t.

  7. 25

    “I wonder if a clever person could imagine a way to move the case forward more quickly.”

    It’s not a matter of being clever. If the PTO refuses to obey the statute, the rules, and its own published policies and guidelines, there’s no amount of cleverness that’s going to move the case forward.

  8. 24

    “That’s an average of 200 claims per application.

    That’s ridiculous.”

    Why? Mr. Hyatt paid the extra claim fees to have the claims examined.

    What is ridiculous is PTO (mis)management charging applicants extra claim fees on the theory that “more claims require more examining resources” and then, after charging, collecting, and spending those extra claim fees, not giving the applicant, or the examiner, what was paid for, i.e. more time to examine the application.

    The PTO’s dogged determination to cling to the “one time fits all” examiner production sheme is what is truly ridiculous.

  9. 23

    “2,400 claims in twelve related patent applications”

    That’s an average of 200 claims per application.

    That’s ridiculous.

  10. 22

    “09/077,337 is not my case”

    Not mine either. I wonder if a clever person could imagine a way to move the case forward more quickly.

    Assuming there is genuine interest in doing that.

  11. 21

    “What’s the inescapable inference and why hasn’t a lawsuit been filed? Have you contacted your Senators?”

    See Deep throat’s post for the inescapable inference.

    A lawsuit has not been filed probably because the PTO would move to dismiss based on the plaintiff’s failure to exhaust his administrative remedies and such motion would likely be granted. All the PTO has to do is not issue a final decision to prevent Mr. Hyatt, or any other applicant, from filing suit, or to get a quick dismissal if a suit was filed. If the PTO denies a petition and sends it back to the examiner for “further examination” then no court’s gonna hear the case.

    I would also assume that as Mr. Hyatt is getting 17 years from issuance as a patent term, time is not of the essence for these applications. Just a guess though.

    I don’t know why the applicants of 09/077,337 haven’t filed a suit. Probably for the reasons I mentioned (i.e. easily dismissed). They’re also going to be entitled to significant PTA, so maybe they’re satisfied with that. Again, just a guess.

    09/077,337 is not my case, so no, I haven’t contacted my Senators.

  12. 20

    “For another example of this very same behavior on the part of the PTO, check out 09/077,337. Not a “submarine” application, but the same inescapable inference can be drawn.”

    What’s the inescapable inference and why hasn’t a lawsuit been filed? Have you contacted your Senators?

    Delaying examination of a patent application is like executing a jaywalker without a trial.

  13. 19

    “Mr. Hyatt has filed repeated requests with the PTO requesting that the PTO simply act on his applications. ”

    Mr. Hyatt called. He accepts your offer to clean his toilet. Show up Tuesday morning, anytime after 8 a.m.

  14. 18

    Re the above assertuib that “Many of Mr. Hyatt’s applications have been awaiting PTO action for YEARS. ..The PTO has not only refused to act on his applications, but has even refused to act on Mr. Hyatt’s petitions to have his applications examined…a substantial part of the blame for any ‘submarining’ .. belongs with certain scofflaws at the PTO who decided to take the law into their own hands.”
    The refusal of a Federal Agency to do its duty is precisely what Administrative Procedure Act suits are for, inter alia, – why doesn’t Hyatt file one if this is all true?

  15. 17

    Re some above comments, when patent terms were statutorily changed [from the old 17 years from issue date, which practically invited laches], a patent still in force on June 8, 1995, OR issued from an application last filed before that date (not re-filed later) has a patent term ending on the later of 20 years from the earliest U.S. filing date, OR 17 years from the date the patent issues, whichever is LONGER. Even for applications filed or re-filed after that date, one CAN get a term EXTENSION of up to 5 more years for time the application was in any interference or on an appeal (to the Board or beyond with at least a partial success), (for that part of the appeal taking more than 3 years from the original filing date). [Also, ample time was provided to file continuations before June 8, 1995.]
    If the filing or re-filing was after on or after May 29, 2000, even more opportunities are provided to extend the patent term beyond 20 years from the earliest claimed filing date, for the PTO missing various processing deadlines (reduced by applicant delays).

  16. 15

    “Much of the time lapse here is due to PTO intransigence. Many of Mr. Hyatt’s applications have been awaiting PTO action for YEARS. Mr. Hyatt has filed repeated requests with the PTO requesting that the PTO simply act on his applications. The PTO has not only refused to act on his applications, but has even refused to act on Mr. Hyatt’s petitions to have his applications examined.

    I do not know the full set of facts; my involvement is far less than the full history. However, I have seen enough of the way the PTO is handling these cases to know that a substantial part of the blame for any ‘submarining’ in Mr. Hyatt’s applications belongs with certain scofflaws at the PTO who decided to take the law into their own hands. The facts make it very difficult to escape an inference of deliberate intent on the part of several PTO officials to break the law.”

    For another example of this very same behavior on the part of the PTO, check out 09/077,337.

    Not a “submarine” application, but the same inescapable inference can be drawn.

  17. 14

    Much of the time lapse here is due to PTO intransigence. Many of Mr. Hyatt’s applications have been awaiting PTO action for YEARS. Mr. Hyatt has filed repeated requests with the PTO requesting that the PTO simply act on his applications. The PTO has not only refused to act on his applications, but has even refused to act on Mr. Hyatt’s petitions to have his applications examined.

    I do not know the full set of facts; my involvement is far less than the full history. However, I have seen enough of the way the PTO is handling these cases to know that a substantial part of the blame for any “submarining” in Mr. Hyatt’s applications belongs with certain scofflaws at the PTO who decided to take the law into their own hands. The facts make it very difficult to escape an inference of deliberate intent on the part of several PTO officials to break the law.

  18. 13

    This raises the issue whether 35 USC 154 is valid. That is, apparently the app was filed before the magic 1995 date whereas if it was filed after that date and relies on a pre-magic date app, the 20 yaers long ago extinguish the patent rights.

    Isn’t it time to challenge 154?

    Saying this, is not to support nefarious submarine tactics. Instead, there are circumstances where the PTO creates decades-long delays and there are many who became screwed when the Urugay Round 154 was enacted.

  19. 12

    “We all are aware, aren’t we, that members of the Board work on a production quota system that limits the amount of time they are given to handle any particular case.”

    From what I understand it is a VERY relaxed production system.

  20. 11

    We all are aware, aren’t we, that members of the Board work on a production quota system that limits the amount of time they are given to handle any particular case.

    If you want to post humor or other off-topic matters, please find another site.

  21. 10

    Duh wrote: “GP, that doesn’t solve this sort of problem. The application was filed before 1995.”

    It was humor, you mouth breather.

    Double Duh.

  22. 9

    can you appeal directly from the BPAI to the Fed Circuit or do you always have to go through the DC District Court first?

  23. 6

    Dennis,
    You and the prior comments have focused on the unusal number of claims and the pre GAAT priority. It is unclear who contributed to this delay, and the PTO’s conduct does not appear to comport with avoiding delays. The real problem with the PTO and particularly with the BPAI is its own wilfull contributions to delay. The PTO’s conduct in this case raises substantial questions of competence of decision-makers at the PTO. What were they thinking after In Re McDaniel? The new appeal rules held up by OMB would have caused a lot more disputes on “grounds of rejection”. This Federal Circuit decision may be an important step for the PTO to finally recognize that it cannot just make up patent law.

    I am afraid that, as taxpayers, we have all lost here because the PTO spent our resources unnecessarily and because the Government will now have to pay Hyatt his attorney’s fees. He is very likely to prevail under the Equal Access to Justice Act, 28 U.S.C. § 2412, as suggested by the holdings in Hanover Potato Prods. v Shalala, 989 F.2d 123 (3rd Cir. 1993):

    “Reasonable basis must exist for agency’s litigation and prelitigation positions for government’s position to be substantially justified, thereby precluding award of attorney fees to prevailing party under Equal Access to Justice Act in litigation against United States.”

    “Burden of demonstrating substantial justification which precludes award of attorney fees to prevailing party under Equal Access to Justice Act in litigation against United States is on government agency”.

    “If the agency raised its position in the second court and lost, it could be charged with attorney’s fees SOLELY BECAUSE IT LOST IN THE FIRST COURT.” (Hanover, at 131, emphasis capitalization supplied).

    This case is a textbook example of an agency raising the same legal position that it raised in a prior court case and lost. This case is even more pertinent to the Hanover holding because here, the PTO dragged the patent applicant through an appeal to the SAME court raising the SAME question of law on which the PTO lost before. There could have been no doubt at the BPAI or at PTO as to the legal meaning of “grounds of rejection” after McDaniel. There could have been no doubt that the PTO’s position was NOT “substantially justified”. I’m afraid the PTO is liable for attorney’s fees “SOLELY BECAUSE IT LOST IN THE FIRST COURT” and raised this losing argument again in Hyatt’s case.

    I suspect that the cost of this legally irresponsible PTO position will far exceed the legal fees that may be awarded in this case, as other similarly situated appellants will demand justice.

    Happy Holidays and best wishes for the New Year.

    Ron Katznelson

  24. 5

    “I’m also curious – does anyone see any solutions to this sort of problem outside of latches or legislation?”

    I think we should do something like 20 years from date of filing, or something.

  25. 4

    I like how the opinion refers to the priority applications as “ancestor patent applications.”

    I’m also curious – does anyone see any solutions to this sort of problem outside of latches or legislation?

  26. 3

    The real shocker exposed here is that after all the public uproar, complaints and litigation due to inexcusably long PTO prosecution delays of numerous Lemelson or Hyatt multiple-continuation “submarine” patent applications [for up to a quarter-century](with claims extensively re-written to cover years-later real products of others) [which patents have already cost the public more than one billion dollars], the current PTO management is obviously STILL failing to control its docket or its examiners to dispose of such anciently-pending “submarine” applications, and apparently STILL failing to apply either “prosecution laches” rejections or even make appropriate Rule 105 prosecution delay inquiries. [Instead, the currrent PTO management tried to PUNISH EVERYONE ELSE for their management failures with completely arbitrary and absolute Rule limitations, even for prosecution-expediting RCE’s, now thankfully enjoined.]

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